WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MBC IP FZ LLC, MBC FZ LLC v. MBC (Modern Broadcast Center) / Sabri Arafa, InMotion Hosting, Inc.
Case No. D2020-1104
1. The Parties
The Complainant is MBC IP FZ LLC, MBC FZ LLC, United Arab Emirates, represented by BSA Ahmad Ben Hezeem & Associates LLP, United Arab Emirates.
The Respondent is MBC (Modern Broadcast Center), Egypt / Sabri Arafa, InMotion Hosting, Inc., United States of America, represented by El-Shereief Law Firm & Consultancy, Egypt.
2. The Domain Name and Registrar
The disputed domain name <mbcegypt.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2020. On May 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 8, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 8, 2020.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2020. The Response was filed with the Center on June 15, 2020.
The Center appointed Adam Taylor as the sole panelist in this matter on June 29, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On July 15, 2020, the Panel issued Procedural Order No. 1 inviting both Parties to respond to various requests for further information. On July 23, 2020, the Panel extended the decision due date to at least August 24, 2020. The Respondent and the Complainant responded to Procedural Order No. 1 on August 2, 2020, and August 5, 2020, respectively.
4. Factual Background
The Complainants (collectively referred to below as “the Complainant”) are part of the MBC Group which started using the mark “MBC” in 1991, as an acronym for “Middle East Broadcasting Center”, and which was the first private free-to-air satellite broadcasting company in the Arabic speaking region.
The Complainant operates a number of television and Internet-based channels including “MBC”, “MBC MISR” (meaning “MBC EGYPT”), “MBC 2”, “MBC 3”, and “MBC 4”. It delivers programmes to over 300 million Arabic-speaking people around the world.
The Complainant’s main website at “www.mbc.net” currently attracts some 20 million hits per month. The Complainant owns many other domain names, some which consist of the term “MBC” followed by a geographic location, e.g., <mbcjordan.com>, <mbcegypt.net>.
The Complainant’s social media followers on MBC-related pages exceed 20 million.
The Complainant owns registered trade marks for MBC in more than 50 countries worldwide including European Union Trade Mark No. 844910, filed June 3, 1988 (registered on March 29, 2005), in class 41.
The Complainant also holds the following Egyptian trade marks:
- Nos. 205394, 205396, 205397 and 205398 for the stylised term “mbc”, filed August 13, 2007, in classes 9, 35, 38 and 41 respectively; and
- Nos. 279879 to 883 for the stylised term “mbc” plus the word “misr” (meaning Egypt” in Arabic script, filed February 26, 2014, in classes 9, 16, 35, 38 and 41 respectively.
In 1996, the Respondent was incorporated as a limited partnership called Sabri Arafa & Partners (“the LP”) with a registered trading name of “Manial Business Center”.
The disputed domain name was registered on August 7, 2006.
In 2012, the Respondent incorporated “Modern Broadcast Center (Sabri Arafa & Partners) LLC” (“the LLC”). (The Respondent says that the LLC – the acronym denotes “limited liability company” – is the same legal entity as the LP mentioned above, just using a changed structure. The Complainant says that they are separate legal entities. For reasons explained in section 6C below, the Panel considers that nothing turns on the distinction and it refers to both entities interchangeably as “the Respondent” except where necessary to refer to them separately.)
As of October 17, 2019, there was a website at the disputed domain name branded “MBC / Modern Broadcast Center”. The site included images and information about various items of video and broadcast equipment as well as contact information for “MBC company headquarter (sic)”.
On March 21, 2020, at the Complainant’s request, Facebook disabled the Respondent’s Facebook page at the URL: “facebook.com/modernbroadcastcenter”.
On March 22, 2020, the Complainant sent a legal letter to the Respondent.
On April 8, 2020, the Respondent telephoned the Complainant in the course of which the Respondent offered to remove “MBC” from the Respondent’s website and social media but declined to change or transfer the disputed domain name unless the Complainant made a substantial payment to it.
At some point after the Complainant’s letter, the branding of the website at the disputed domain name was changed to “MBCEgypt / Modern Broadcast Center LLC” and the contact information changed to “MBCEgypt company headquarter (sic)”.
In a further telephone call on April 15, 2020, the Respondent stated that it had removed all references to “MBC” from its website but that if the Complainant still wanted the disputed domain name it would have to buy it.
5. Parties’ Contentions
A summary of the Complainant’s contentions is as follows:
The Complainant’s trade mark for MBC is a famous trade mark, well known worldwide.
The Complainant has acquired unregistered trade mark rights in that term deriving from its years of extensive use and advertising since 1991.
The disputed domain name is confusingly similar to the Complainant’s trade mark, which significantly predates the disputed domain name. Users are likely to confuse the disputed domain name with the Complainant’s trade mark. The only difference is addition of the word “Egypt”, which does not add anything to the dominant term “MBC” and which in fact increases the likelihood of confusion because of the Complainant’s own connection with Egypt and its ownership of the domain name <mbcegypt.net>.
The Respondent lacks rights and legitimate interests in the disputed domain name.
The Complainant has not licenced or authorised the Respondent to use its trade mark in a domain name.
There is no evidence that the Respondent owns registered trade marks for MBC in Egypt or elsewhere.
The Respondent is not making legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Nor is the Respondent using the disputed domain name in connection with a bona fide offering of goods or services. Rather, it is diverting Internet users from the Complainant to the Respondent’s own website by deliberately creating confusion with the Complainant’s mark for financial gain.
The disputed domain name was registered and is being used in bad faith.
It is inconceivable that the Respondent was unaware of the Complainant’s well-known trade mark and the Complainant has received positive confirmation of this from the Respondent.
The Respondent registered the disputed domain name long after the Complainant’s trade mark was first registered in 1988 and after the Complainant had begun using and advertising its mark in the 1990’s.
After receiving the Complainant’s legal letter, the Respondent sent an email response followed by telephone call whereby the Respondent requested a call to discuss the Facebook page takedown and the disputed domain name. Later, a telephone call took place in which the Respondent’s representative sought financial compensation in return for transfer of the disputed domain name to the Complainant. This approach undermines any claim by the Respondent to alleged legitimate rights in the term “MBC” and constitutes additional evidence of cybersquatting intent on the part of the Respondent.
The disputed domain name is not a domain name that any broadcasting provider would choose unless it was trying to create a false association with the Complainant. There was no plausible reason for the Respondent to select the disputed domain name other than to profit from confusion caused to Internet users seeking the Complainant and/or to damage the Complainant.
Not only are the Parties’ respective acronyms identical, the Respondent uses “MBC” on its website as an acronym for “Modern Broadcast Center”, which is nearly conceptually identical to the Complainant’s name “Middle East Broadcasting Center”, particularly given that the Complainant had been operating for over 15 years by 2006, when the Respondent began its Egyptian company and that the Complainant was responsible for modernizing the Arabic broadcasting market. The Complainant finds it difficult to believe that the Respondent’s name was not inspired or invented in order to create a link to the Complainant, especially as the Respondent operates in the same industry as the Complainant and provides goods and services through the same channels as the Complainant.
The disputed domain name is designed to mislead Internet users into thinking that they are visiting the regional Egyptian website of the Complainant. Addition of the word “Egypt” to the Complainant’s trade mark is of itself further evidence of bad faith.
The Respondent’s maintenance and use of the disputed domain name infringes the Complainant’s trade mark rights.
The Respondent changed its website at the disputed domain name following the Complainant’s legal letter but the Complainant’s rights continue to be infringed by the disputed domain name itself as well as the content at the website.
A summary of the Respondent’s contentions is as follows:
The disputed domain name is not confusingly similar to the Complainant’s trade marks.
The acronym “MBC” is not exclusive to the Complainant and may legitimately be used to refer to other entities in various industries. It is irrelevant that the Complainant holds a “major reference in its industry via its acronym”.
The Respondent’s use of “MBC” in the following very specific industry does not “inherently” refer to the Complainant: “integrating, designing, and building broadcast systems, conducting studio installation for news, entertainment, green-screen, [TV shopping] channels, single-camera studios, and multicamera studios for broadcasting and production companies, in addition to designing and building custom technical furniture for studios”.
On the contrary, the Respondent has been known “for a very well-established period of time [by] the acronym MBC in its industry, years before the registration of the disputed domain [name].”
In any case, the Respondent mostly refers to itself, not by its acronym, but by its full names “Modern Broadcast Center, Sabri Arafa & Partners” or “Modern Broadcast Center LLC”, in respect of neither of which has the Complainant made any comparable claim or provided evidence showing that they use “MBC” as a mark or other type of identifier.
None of the UDRP cases cited by the Complainant are relevant as here there is a “discrepancy” between the Parties’ respective industries. In the previous UDRP case involving the Complainant itself, MBC FZ - LLC v. WhoisGuard / Ebator, Tarek Hassan Abdelaal, WIPO Case No. D2012-2305 (<mbcegypt.net>), the respondent reproduced content identical to that owned by the Complainant but that is not the case here.
The Complainant is wrong to speculate that the Respondent’s name was inspired or invented in order to create a link to the Complainant. The fact that the Respondent is using “MBC” does not mean that the Parties are operating in the same industry and that the Respondent is providing goods and services through the same channels as the Respondent. The Respondent’s use of “MBC” does not entail any connection with the Complainant or its profile in the broadcasting industry given the scope of the Respondent’s activities.
The Respondent possesses rights and legitimate interests in the disputed domain name.
The content at the Respondent’s website clearly shows that the Respondent has no intent to target the Complainant’s trade mark and is indicative of fair use.
The Respondent has been known by the disputed domain name. Since its inception in 1996, the Respondent’s use of “MBC” has become well known. This was a convenient abbreviation of the Respondent’s original name “Manial Business Center – Sabri, Arafa & Partners”, which was changed in 2014 to “Modern Broadcast Center”, abbreviated to “MBC Egypt”. Throughout the years, this has been the most common way that clients and partners have referred to the Respondent.
In 2011, the Respondent received a thank you plaque from PlayBox Technology, for whom the Respondent is an authorised seller, referring to the Respondent as “MBC Egypt”.
In 2019, an Internet news article / press release referred to the Respondent as “Modern Broadcast Center (MBC)”.
The difference between the Parties’ areas of business is critical. The Respondent has used the disputed domain name in connection with a bona fide offering of services that are not in any way related to the Complainant’s business of operating television and Internet-based channels. The Respondent’s customers are companies similar to the Complainant while the Complainant’s target audience are television viewers in the Middle East.
Before filing this case, the Complainant was familiar with, and consented to, the Respondent’s website and its services as described above as, between 2015 and 2018, the Complainant corresponded with the Respondent regarding supply of the Respondent’s equipment. Such knowledge constitutes authorisation by the Complainant to use the disputed domain name.
The disputed domain name has not been registered or used in bad faith.
The Respondent registered the disputed domain name some eight years before the Complainant’s 2014 Egyptian registered trade mark for “MBC Misr”, and which the Respondent considers to be the relevant trade mark for the purpose of this proceeding as the Complainant has not specified which trade mark the Respondent allegedly infringed.
The fact that the Respondent is not a competitor of the Complainant reinforces the fact that the Respondent acted in good faith in registering the disputed domain name before the Complainant’s launch of the “MBC Misr” channel and registration of the above-mentioned trade mark.
As the Respondent does not work or compete with the Complainant, it is irrelevant if the Respondent was aware of the Complainant’s rights in the trade mark.
The Complainant’s allegation regarding the Respondent’s offer to sell the disputed domain name to the Complainant is merely an unsupported assertion.
The Respondent’s website is not likely to mislead visitors into thinking that they are visiting the regional part of the Complainant’s website. The content of the Respondent’s website clearly illustrates the differences between the Parties’ respective lines of business.
This distinction will be obvious to any visitor to the Respondent’s website, given the material differences in wording, style, colour schemes and services listed. Furthermore, the Respondent’s website makes no mention of television shows that one would expected to be shown on the Complainant’s website. Nor does the Respondent use “Misr”, the Arabic word for “Egypt”.
The Respondent denies that it has infringed any of the Complainant’s trade marks.
C. Further Statements
Each party filed a further statement in the response to Procedural Order No. 1, referred to in section 3 above. The Panel refers to such submissions below insofar as it considers them relevant to its decision.
6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established rights in the mark MBC by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and worldwide use of that term.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive, geographical, or otherwise, would not prevent a finding of confusing similarity under the first element.
Here, the Complainant’s trade mark is readily recognisable within the disputed domain name and, accordingly, the addition of the geographical term “Egypt” does not avoid a finding of confusing similarity.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
It is unnecessary for the Panel to consider this element in light of its finding under the third element below.
C. Registered and Used in Bad Faith
As to registration in bad faith, the Panel will first consider, based on the evidence before it, the circumstances whereby the Respondent registered the disputed domain name in 2006 and, in particular, the likelihood or otherwise that it did so in order to illicitly target the Complainant’s trade marks.
On the one hand, the Complainant has established an extensive reputation in the term “MBC” arising from its use for broadcasting services dating back to the 1990’s, albeit that it appears that the Complainant only started using the name “MBC Egypt” for a specific channel in 2012. Indeed, the Respondent has admitted that it was aware of the Complainant and its television channels by the time of registration of the disputed domain name in 2006.
The Panel also notes that the Respondent operates in the broadcast industry, supplying equipment to broadcasters such as the Complainant – although it is not clear precisely when the Respondent began this aspect of its trading activities. The Complainant asserts that in fact the Respondent is a direct competitor of the Complainant because, as well as broadcasting, the Complainant also supplies goods or services which facilitate broadcasting.
Furthermore, in 2012 the Respondent adopted the name “Modern Broadcast Center”, which is strikingly similar to the Complainant’s name: “Middle East Broadcasting Center” – especially when viewed as an acronym. The Respondent claims that this was designed to reflect a change in its commercial activity in the context of a contract whereby it became the exclusive distributor in North Africa for a video solutions provider.
On the other hand, in 1996, some ten years before registration of the disputed domain name, the Respondent registered “Manial Business Center” as the trading name for its business. The Respondent says that it chose “Manial” because the company was incorporated in the Manial area of Cairo and that it selected the words “Business Center” because its first line of business involved “representation of foreign clients, engagement in import and export operations on their behalf, and offering photography and advertisement services.” The Respondent has produced two Air Waybills dated 2000 and 2002 respectively in which the consignee is described as “MBC / Manial Business Center”.
On the face of it, therefore, in 2006 the Respondent had a plausible reason for registering the disputed domain name consisting of (a) the acronym “MBC”, which the Respondent had been using for its decade-old trading name “Manial Business Center”, a name unrelated to the Complainant, and (b) the term “Egypt”, where the Respondent is located.
While the other matters mentioned above (e.g., its somewhat implausible claim that the parties operate in different sectors) do raise some questions over the Respondent’s bona fides, in the context of this limited proceeding the Panel does not consider that it is in a position to conclude that the Respondent selected the disputed domain name by reference to the Complainant’s trade mark rather than based on the Respondent’s own pre-existing use of “MBC” as an acronym for its trading name “Manial Business Center”, unrelated to the Complainant.
The Complainant suggests that the Respondent’s trading name is irrelevant because the register refers only to the full trading name, i.e., not to the acronym “MBC”. However, the fact that the Respondent had registered “Manial Business Center” shows that it had a potentially legitimate reason to use the acronym “MBC” – and indeed the Respondent did use this acronym prior to registration of the disputed domain name.
The Respondent’s adoption of the name “Modern Broadcast Center” in 2012 has given the Panel some pause for thought – because of its similarity to the name “Middle East Broadcasting Center” used by the Complainant. The Panel would add that, in its view, nothing turns on whether the LLC was a continuation of the LP or a separate legal entity, a point in dispute between the Parties. All that matters is that an entity connected with the Respondent started using this new name in 2012. However, even if this development amounts to an act of bad faith vis-à-vis the Complainant, it occurred some six years after registration of the disputed domain name in 2006, at which point the Respondent had been using “MBC” in the context of its different trading name “Manial Business Center”.
The Complainant further points to the statement in the Response that the Respondent mostly refers to itself by its full name “Modern Broadcast Center” rather than “MBC”. The Complainant says that the if the Respondent did not intend to use the “MBC” as a “source identifier”, the only possible purpose of use of this term in the disputed domain name was to divert traffic intended for the Complainant. But the Panel does not understand the Respondent to say it never intended to use the acronym in this way, simply that it mostly used its full name. For example, the Respondent asserted that it has been known “for a very well-established period of time [by] the acronym MBC in its industry, years before the registration of the disputed domain [name].”
The Complainant rightly points out that the Respondent has been reticent as to the pre-action telephone conversations between the Parties, even declining to give its version in response to the Panel’s request. However, the Panel does not treat the Respondent’s offers in the course of those conversations to sell the disputed domain name to the Complainant – by themselves / as made in response to the Complainant’s legal letter and some 14 years after registration of the disputed domain name – as evidence of bad faith.
In summary, for the reasons explained above, the Panel considers that, whether the Respondent has later used the disputed domain name in bad faith, in light of the Respondent’s pre-existing registration, and use, of the trade name “Manial Business Center” and corresponding acronym “MBC”, the Complainant has failed to establish that the Respondent registered the disputed domain name in bad faith in 2006.
The Panel would add that such conduct (i.e., subsequent bad faith use) would fall under the wider issue of trade mark infringement that the Complainant has raised. Of course, this decision does not prejudice the ability of the Complainant to pursue such matters before the relevant national courts, should it wish to do so.
For the above reasons, the Panel finds that the Complainant has failed to establish the third element of paragraph 4(a) of the Policy.
For the foregoing reasons, the Complaint is denied.
Date: August 28, 2020